Search twice, launch once

The importance of conducting clearance searches prior to launching a new brand or product line has again been highlighted by the decision in The Agency v H.A.S Real Estate.

Ultimately the court found that HAS had not infringed The Agency’s trade marks due to a lack of sufficient similarity between the signs as registered and those used by HAS. The descriptive character of the word AGENCY in referring to real estate services was also noted by the Court.

The above finding meant that it was not necessary for the Court to determine whether HAS had an available defence to infringement based on good faith use of a sign to describe its services. Nevertheless, it was noted that the requirement of good faith is not satisfied merely by proving the absence of fraud or conscious dishonesty. There is also a requirement of reasonable diligence to ascertain that a chosen name does not conflict with a registered trade mark. Although HAS was aware of The Agency brand and had undertaken business name searches, “no search was conducted of the Register of Trade Marks to ascertain what marks had been registered”. HAS would therefore have been unable to establish “good faith” had it needed to rely on the defence.

The decision illustrates the risks that can arise with a new commercial endeavour if the potential intellectual property implications are not given due consideration.

BEng(Civil)(Hons) LLB LLM FIPTA

Adrian is an intellectual property lawyer who combines legal expertise with deep technological knowledge to advise Australian and international businesses in the resolution of commercial IP disputes.